Professional Documents
Culture Documents
Plaintiffs - Appellants/Cross-
Appellees,
Defendants - Appellees/Cross-
Appellants,
and
Defendants - Appellees,
and
Defendant.
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*
This order and judgment is not binding precedent, except under the doctrines
of law of the case, res judicata, and collateral estoppel. It may be cited, however, for
its persuasive value consistent with Fed. R. App. P. 32.1 and 10th Cir. R. 32.1.
After a jury verdict, any party may move for a new trial under Federal Rule of
Civil Procedure 59(a). If the district court orders a new trial, it necessarily vacates
the jurys verdict and its judgment. To reinstate a verdict and judgment, a party that
opposes the new trial must appeal after the new trial and convince us that the district
court erred in ordering a new trial. The case before us presents an unusual twist to
this general situationhere it is the party that moved for a new trial now seeking to
avoid the new trials less favorable result. It seeks to enforce its first judgment (while
reinstating damages the jury awarded for its unjust-enrichment claim). We hold that
In its Complaint, Gaedeke Holdings VII, LTD and Gaedeke Oil & Gas
Operating, LLC (collectively Gaedeke) sued Landon Speed, Todd Baker, and Baker
Petroleum and Investments, Inc. (collectively Defendants), alleging that they had
Gaedeke asserted six claims against Defendants: (1) violation of the Oklahoma
Uniform Trade Secrets Act, Okla. Stat. tit. 78, 85 (2009); (2) violation of the
Lanham Act, 15 U.S.C. 1125(a)2; (3) misappropriation and conversion; (4) civil
1
Gaedekes Third Amended Complaint also asserts claims against David
Mills, Jim Ashford, Mayhem Oil and Gas, Inc., Windsor Energy Group, LLC, and
Everest Operations Management, LLC. In its opening brief, Gaedeke seeks relief
against only Todd Baker, Baker Petroleum, and Landon Speed.
2
Gaedeke asserted a reverse-passing-off claim. The Lanham Act was
intended to make actionable the deceptive and misleading use of marks, and to
protect persons engaged in . . . commerce against unfair competition. Dastar Corp.
2
conspiracy; (5) tortious interference; and (6) unjust enrichment, constructive trust,
and accounting. The jury found in Gaedekes favor except on its claim for tortious
$1,000,000 for conversion, $1,500,000 for civil conspiracy, and $1,000,000 under the
Lanham Act.
After the first trial, Defendants renewed their motion for judgment as a matter
of law (after first making a motion at the close of Gaedekes case in chief) seeking
relief on three grounds.3 First, Defendants argued that Gaedeke had lacked standing
to sue on behalf of the AMI Partnership because the AMI Partnership, rather than
Gaedeke, owned the trade secret.4 Appellees Supp. App. Vol. 1 at 21013. From
this, Defendants argued that Gaedeke could not be the real party in interest under
Federal Rule of Civil Procedure 17. Second, Defendants argued that Gaedekes
remedy at law. Defendants cited Oklahoma law providing that a district court will
not ordinarily exercise its equitable jurisdiction to grant relief for unjust enrichment
v. Twentieth Century Fox Film Corp., 539 U.S. 23, 28 (2003) (quoting 15 U.S.C.
1127). Reverse passing off occurs when someone misrepresents owning goods or
services belonging to another. Id. at 27 n.1.
3
Defendants moved for judgment as a matter of law both after Gaedeke rested
and after Defendants presented their case. They renewed their motion for judgment as
a matter of law after the jurys verdict.
4
Gaedeke is a partner of AMI Partnership. Defendants argued that before the
misappropriations, Gaedeke transferred the trade secret to the AMI Partnership and
Gaedeke sought damages on behalf of the AMI partners.
3
where a plaintiff has an adequate remedy at law. Id. at 223. Defendants argued that
the Oklahoma Uniform Trade Secrets Act provided an adequate remedy at law,
Defendants argued that the Oklahoma Uniform Trade Secrets Act had displaced
Indeed, the Oklahoma Uniform Trade Secrets Act displaces conflicting tort,
restitutionary, and other law of this state providing civil remedies for
misappropriation of a trade secret. Okla. Stat. tit. 78, 92(A). Defendants argued
that this statute required the district court to dismiss Gaedekes three common-law
claims.
In resolving Defendants motion, the district court agreed with Gaedeke that it
was the real party in interest and had authority to bring the claims. But the district
court agreed with Defendants that Gaedekes common-law claims were unavailable
because the Uniform Trade Secrets Act bars common law claims . . . that are based
at 202. The district court concluded that Gaedeke could not pursue its conspiracy and
conversion claims, because those claims depended on the same facts alleged to
support the claim for misappropriation of trade secrets. Finally, the district court
agreed with Defendants that Gaedeke could not pursue its equitable unjust-
enrichment claim, because where a plaintiff has an adequate remedy at law, a court
will not ordinarily exercise its equitable jurisdiction to grant relief for unjust
4
The same day, the district court entered a judgment awarding $1,000,000 to
Gaedeke filed a motion under Federal Rule of Civil Procedure 59 to alter or amend
enrichment claim, or alternatively, for a new trial on damages. Gaedeke argued that
the Oklahoma Uniform Trade Secrets Act permits damages for unjust enrichment in
addition to actual damages. Next, Gaedeke argued that Defendants had waived their
argument that the Oklahoma Uniform Trade Secrets Act preempted their unjust-
and alternatively, Gaedeke argued that absent the district courts amend[ing] the
judgment [to reinstate the jurys unjust-enrichment award], the Court should, in the
interests of justice and fundamental fairness, grant a new trial as to damages. Id.
at 240. On this point, Gaedeke argued that the district court had substantially
damages.
Over Defendants objections, the district court granted Gaedeke a new trial on
damages. The district court agreed that it had prejudiced Gaedeke by striking
Gaedekes expert witnesses without allowing Gaedeke to respond. The district court
stated in light of this Order, the Court VACATES the Judgment . . . as to damages
only. Id. at 389. In a footnote, the district court explained that [t]he portion of the
Judgment whereby the Court orders that judgment should be entered in favor of
plaintiffs and against defendants . . . is not vacated. Id. n.3. After granting a new
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trial on damages, the district court treated Gaedekes motion to alter or amend the
judgment as moot.
In the second trial, despite Gaedekes presenting its previously excluded expert
testimony, the jury awarded Gaedeke just $40,000 in damages. The district court
On appeal, Gaedeke doesnt argue that the district court erred in granting
Gaedekes motion for a new trial on damages. Nor does it argue that the district court
erred in any way during the second trial. Instead, Gaedeke disregards the second
jurys verdict, arguing that the district court erred by reducing the first jurys
damages award to $1,000,000. Specifically, Gaedeke argues that [t]he trial court
erred when, after the first trial, it refused to render a judgment that awarded both
under [the Oklahoma Uniform Trade Secrets Act]unjust enrichment and actual
new trial on damages, the second jurys verdict superseded the first jurys verdict.
Defendants argue that Gaedeke cannot successfully move for a new trial on damages
and then later demand the higher verdict and judgment from the first trial.
5
On appeal, Gaedeke does not claim that the district court erred in dismissing
its claims for unjust enrichment, conspiracy, conversion, or violation of the Lanham
Act. Rather, Gaedeke claims the district court should have awarded the unjust-
enrichment damages as part of the misappropriation-of-trade-secrets claim.
6
For their part, Defendants cross-appeal the district courts partial denial of
their Rule 50 motion for judgment as a matter of law (made after the first trial). See
Fed. R. Civ. P. 50. In particular, they argue that the district court erred by not
granting their motion, because Gaedeke presented no evidence that it owned the trade
II
judgment as a matter of law, applying the same standard as applied in the district
court. Arnold Oil Props. LLC v. Schlumberger Tech. Corp., 672 F.3d 1202, 1206
(10th Cir. 2012). Under Rule 50, a court should render judgment as a matter of law
when a party has been fully heard on an issue and there is no legally sufficient
evidentiary basis for a reasonable jury to find for that party on that issue. Reeves v.
Sanderson Plumbing Prods., Inc., 530 U.S. 133, 149 (2000) (quoting Fed. R. Civ. P.
50(a)).
Gaedeke can appeal the district courts earlier Order granting Defendants Rule 50
motion for judgment as a matter of law, which reduced Gaedekes damages by the
$3,400,000 the jury awarded for its unjust-enrichment claim. Defendants argue that
when Gaedeke obtained a new trial, the new trial necessarily vacated the district
7
After the jurys verdict, Defendants renewed their motion for judgment as a
matter of law under Rule 50(b). The district court partially granted Defendants
conspiracy. That same day, the district court entered judgment in favor of Gaedeke
for $1,000,000.
Dissatisfied with that result, Gaedeke filed a motion under Rule 59 asking the
district court to alter or amend its judgment to restore the jurys damage award on its
Defendants objections, the district court granted Gaedekes motion for new trial on
In the second trial on damages, the district court allowed Gaedekes expert
witnesses to testify. Despite this testimony, the jury awarded Gaedeke a mere
second jury trial, to reinstate the jurys first damages award, to reverse the district
courts order granting Defendants Rule 50 motion, and to restore the damages for its
By seeking a new trial under Rule 59(a) after the district court declined to alter
or amend its judgment under Rule 59(e), Gaedeke chose to abandon the first jurys
damages verdict. See Fed. R. Civ. P. 50(c)(2) advisory committees note to 1963
amendment. Once the district court granted Gaedekes motion for a new trial under
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Rule 59(a)(1)(A), the judgment is superseded.6 Id.; see United States v. Ayres, 76
U.S. 608, 610 (1869) (Granting a new trial has the effect of vacating the former
judgment, and to render it null and void, and the parties are left in the same situation
as if no trial had ever taken place.); McClendon v. City of Albuquerque, 630 F.3d
1288, 1294 (10th Cir. 2011) (explaining that an order withdrawing approval of a
vacates any earlier final decision); 12 Moores Federal Practice 59.19 (3d ed. 2016)
(When a court grants a Rule 59 new trial motion, the old judgment is of no effect
and the new ruling supplants the old judgment.). Consistent with this background,
we hold that once Gaedeke sought and received a new trial, this vacated the jurys
Though opposing the new-trial motion in the district court, Defendants have
not appealed the district courts order granting a new trial. Had they done so, and had
we agreed that the district court erred in granting the new trial, we could have
reinstated the district courts judgment. See, e.g., Natl Farmers Union Auto. & Cas.
Co. v. Wood, 207 F.2d 659, 662 (10th Cir. 1953) ([T]he two orders each purporting
to grant a new trial are vacated; and the cause is remanded with directions to reinstate
and reenter the original judgment.); Wood v. Harrington, 133 F.3d 933, at *1 (10th
Cir. 1998) (unpublished) (In that first appeal, we ordered the judgment from the
second trial to be vacated because defendants motion for a new trial had been
6
In contrast, where a party moves for a conditional new trial under
Rule 50(c)(2) depending on the outcome of the appeal, the judgment will not be
superseded. Id.
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granted on an impermissible ground, and ordered the judgment from the first trial to
be reinstated.); 9B Charles Alan Wright & Arthur R. Miller, Federal Practice and
Procedure 2818 (3d ed. 2016) (On appeal from the final judgment following the
second trial, the [party opposing the new trial] may claim error in the grant of the
new trial. If the appellate court agrees, it will reinstate the verdict reached at the first
trial.). But because Gaedeke itself asked the district court to grant a new trial on
damages, it cannot now complain that it got its wish.7 Thus, Gaedeke may not
reinstate the district courts judgment from the first trial. Gaedeke has no legal basis
Appealing the district courts partial denial of their Rule 50 motion renewed
after the first jurys verdict, Defendants argue that the district court should have
Defendants argue that Gaedeke transferred the trade secret to the AMI
and sought damages on behalf of the AMI partners. Because the AMI Partnership
7
Gaedeke doesnt dispute that the district court vacated its judgment. Instead,
Gaedeke merely asserts that it did not receive the full relief it requested since it
alternatively moved for a motion to alter or amend the district courts judgment. We
agree that Gaedeke would be permitted to review the district courts order granting
the new trial. But as we explained above, the district court didnt err in granting
Gaedekes motion for new trial and Gaedeke doesnt assert that it did. Gaedeke
provides no grounds for us to reinstate the jurys verdict.
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owned the trade secret, not Gaedeke, Defendants argue that Gaedeke failed to prove
its ownership of the trade secretwhich Defendants say is an element of a claim for
right to possess and use the trade secret and retained that right even after it
transferred the trade secret. To resolve this dispute, we must determine whether
Oklahoma law.
When the federal courts are called upon to interpret state law, the federal
court must look to the rulings of the highest state court. Johnson v. Riddle, 305 F.3d
1107, 1118 (10th Cir. 2002). If no decision by that court exists, then we must apply
what [we] find to be the state law after giving proper regard to relevant rulings of
other courts of the State. Stickley v. State Farm Mut. Auto. Ins. Co., 505 F.3d 1070,
1077 (10th Cir. 2007) (quoting Johnson, 305 F.3d at 1119). The decision of an
intermediate appellate state court is a datum for ascertaining state law which is not
that the highest court of the state would decide otherwise. Id. (quoting West v.
American Tel. & Tel. Co., 311 U.S. 223, 237 (1940)).
Like many other states, Oklahoma has adopted the Uniform Trade Secrets Act.
Okla. Stat. tit. 78, 85. Nothing in Oklahomas Act defines ownership of the trade
secret as an element of a claim for misappropriation of trade secrets. Id. tit. 78,
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as an element of a claim for misappropriation of trade secrets. For example, in MTG
Guarnieri Mfg., Inc. v. Clouatre, 239 P.3d 202, 209 (Okla. Civ. App. 2010), the
Oklahoma Court of Civil Appeals stated that [t]o prove misappropriation of a trade
secret, [a plaintiff] must show (i) the existence of a trade secret, (ii) misappropriation
of the secret by defendants, and (iii) use of the secret to [the plaintiffs] detriment.
See also Musket Corp. v. Star Fuel of Oklahoma, LLC, 606 F. Appx 439, 451 (10th
misappropriation of trade secrets under Oklahoma law); Pre-Paid Legal Servs., Inc.
v. Cahill, 171 F. Supp. 3d 1219, 1227 (E.D. Okla. 2016) (same); Micro Consulting,
Inc. v. Zubeldia, 813 F. Supp. 1514, 1534 (W.D. Okla. 1990) (same).
This position is consistent with other states that have adopted similar versions
of the Uniform Trade Secrets Act. For instance, Marylands Uniform Trade Secrets
Act is nearly identical to Oklahomas. Compare Md. Code Ann., Com. Law
11-1201 (West 2017) with Okla. Stat. tit. 78, 85. In DTM Research, L.L.C. v.
AT&T Corp., 245 F.3d 327, 333 (4th Cir. 2001), the court, applying Maryland law,
concluded that fee simple ownership in its traditional sense is not an element of a
trade secrets misappropriation claim in Maryland. The court explained that the
concept of a fee simple interest in a trade secret, or any proprietary interest, is not
entirely useful in defining the elements of a misappropriation claim. Id. at 332; see
at *8 (E.D. Mich. May 22, 2006) (The Court agrees with the holding in DTM
Research that for purposes of trade secrets law, the focus is appropriately on the
12
knowledge, or possession, of the trade secret, rather than on mere ownership in the
traditional sense of the word.); Parking Co., L.P. v. Rhode Island Airport Corp., No.
Civ. A. P.B. 2004-4189, 2005 WL 419827, at *3 (R.I. Super. Ct. Feb. 18, 2005)
property right therein . . . the [Uniform Trade Secrets] Act does not require
inquiry.).
Oklahoma adopted the Uniform Trade Secrets Act originally drafted by the
National Conference of Commissioners. See Okla. Stat. tit. 78, 85. The Uniform
Acts commentary also suggests that its drafters did not intend to limit trade-secret
claims to owners. For instance, the commentary states that [w]here more than one
person is entitled to trade secret protection with respect to the same information, only
Trade Secrets Act 2 cmt. (2005). This comment suggests that multiple parties could
protection to owners, they could have easily stated where more than one owner is
of trade secrets. See, e.g., Surgidev Corp. v. Eye Tech., Inc., 648 F. Supp. 661, 680
(D. Minn. 1986) ([P]laintiff . . . must prove the following elements: (1) plaintiff is
the owner of a trade secret . . . .). But many of these cases are easily distinguishable.
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For example, under Minnesota law, applied by the court in Surgidev, the statute
defining a trade secret specifically refers to whether the owner intends or expects
the secrecy of the type of information comprising the trade secret to be maintained.
Minn. Stat. Ann. 325C.01 (West 2017) (emphasis added). Unlike Minnesotas
the commentary to the Uniform Trade Secrets Act, and distinguishing language in
other states statutes, we see no basis to apply a new element for a claim for
misappropriation of trade secrets under Oklahoma law. Thus, the district court did
not err in partially denying Defendants motion for judgment as a matter of law.
III
Gregory A. Phillips
Circuit Judge
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